OPPOSITION No B 2 628 785

Solana GmbH & Co. KG, Albert-Einstein-Ring 5, 22761 Hamburg, Germany (opponent), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333 München, Germany (professional representative)

a g a i n s t

Agventure BV, Delhorstpad 1a, 6703 BE Wageningen, Netherlands (holder), represented by V.O., Carnegieplein 5, 2517 KJ The Hague, Netherlands (professional representative).

On 19/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 628 785 is partially upheld, namely for the following contested goods:

Class 31:         Fresh potatoes; potato seeds.

2.        International registration No 1 242 028 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 242 028. The opposition is based on European Union trade mark registration No 8 805 161. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 31:         Agricultural, horticultural and forestry products and grains, not included in other classes; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 44:        Agricultural, horticultural and forestry services, in particular the rearing and propagation of plants, for others.

The contested goods and services are the following:

Class 31:         Fresh potatoes; potato seeds.

Class 42:        Scientific and technological services and research and design relating thereto; services in the field of industrial analysis and research; design and development of computer hardware and software.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 31

The contested fresh potatoes are included in the broad category of the opponent’s fresh vegetables, and the contested potato seeds are included in the broad category of the opponent’s seeds. Therefore, they are identical.

Contested services in Class 42

The contested scientific and technological services and research and design relating thereto; services in the field of industrial analysis and research; design and development of computer hardware and software are services in the field of science and technology. They have no relevant points in common with any of the opponent’s goods and services in Classes 31 and 44. They target professionals in different fields and have different natures and purposes. They are produced and distributed by different companies and are not in competition or complementary to each other. Therefore, they are dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of agriculture.

The degree of attention may vary from high to low, depending on the consumer’s expertise in the field and the purposes for which the goods are purchased. A professional purchasing potato seeds to cultivate in large amounts for commercial purposes will have a high degree of attention, whereas the general public buying potatoes at the supermarket will have a lower degree of attention due to the price of the product and the frequency of purchase.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is a figurative mark composed of the verbal element ‘Solana’ and a figurative element, namely a flower. The background consists of a blue quadrangle, and the sign is depicted in white and blue. The mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The contested sign is a figurative mark composed of the verbal element ‘Solynta’ in black, stylised, title case letters and two figurative elements, namely a stylised purple star or flower with a smaller, orange star-shaped figure inside it, and three dots in orange, purple and green placed after the verbal element.

The figurative element depicting a flower in the earlier mark might be associated by a part of the public with potato flowers, rendering the element allusive to the goods in question. In addition, a part of the public may perceive the figurative element of the contested sign as a flower and, in this case, the same findings will apply as to the figurative element of the earlier sign. In particular, the colouring of the figurative element in the contested sign may lead to the perception of a potato flower.

The holder argues that the verbal element ‘Solana’ refers to the family of plants Solaneae and to Solanum tuberosum, which is the scientific name for potatoes. The Opposition Division is of the opinion that there is a possibility that people with expertise in agriculture could associate the word with potatoes. However, the average consumer is reasonably well-informed and reasonably observant and circumspect but not an intellect or a genius, and is unlikely to perceive such a connection. Therefore, the holder’s argument is set aside.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Neither ‘SOLANA ‘nor ‘Solynta’ has a meaning for the relevant German-speaking public, for instance. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the verbal elements do not evoke any concept and, therefore, are distinctive in relation to the relevant goods.

The earlier sign has no elements that could be considered clearly more dominant than other elements. However, in the contested sign, the verbal element and the figurative element, depicting a flower or a star, of the contested sign overshadow the three dots placed after the verbal element by virtue of their size. The two former elements are the dominant elements of the contested sign, as they are the most eye-catching. In addition, the three dots can be perceived by the relevant public as banal.

Visually, the verbal elements of the signs coincide in their beginnings, ‘Sol’, and their last letters, ‘a’, and both signs contain the letter ‘n’; therefore, they have five letters in common. Moreover, the signs contain a figurative element composed in both cases of a pentagonal shape. However, the signs differ in the number of letters, six versus seven, and in the letters between the first three letters and the last letter, ‘an’ versus ‘ynt’, so the letter ‘n’ that the signs have in common is positioned differently. The marks as a whole differ in their colours, stylisation and the positions of the figurative elements. The three dots found to be less dominant in the contested sign have no counterparts in the earlier mark.

The first parts of the conflicting marks, ‘Sol’, are identical (except for their stylisation). Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of their first three letters, ‘Sol’, and last letters, ‘a’, and the letters, ‘n’. Furthermore, both signs contain three syllables. The pronunciation differs in the sound of the letters ‛y*t’ in the contested mark; these letters have no counterparts in the earlier sign, which instead contains the letter ‘a’.

Therefore, the signs are aurally similar to an average degree.

Conceptually, for the part of the public under consideration, neither of the verbal elements of the signs has a meaning. For the part of the public for which the figurative elements of the signs will be associated with similar meanings, the signs overall are conceptually similar to a low degree. For the rest of the public, as the figurative elements will be associated with dissimilar meanings, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The signs are visually similar to a low degree and aurally similar to an average degree. Conceptually, only for a part of the public, the signs are similar to a low degree because both signs contain a device that could be perceived as a (potato) flower.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, the contested goods are identical to the opponent’s goods.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that the differences between the signs are not capable of counteracting their similarities and that, in respect of the identical goods, there is a likelihood of confusion, at least on the part of the German-speaking, general part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Therefore, there is no need to analyse the remaining part of the public.

Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 8 805 161. It follows that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ana MUÑIZ RODRIGUEZ

Birgit Holst FILTENBORG

Plamen IVANOV

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.